The Law on Art, Copyright, and Intellectual Property in Singapore (Part 4 - Trade marks)
by Ronald JJ Wong and Stuart Peter
Who owns rights to IP? How can they be used? Director Ronald JJ Wong and Associate Stuart Peter explore some of these questions and issues, along with possible case studies in a four-part series on the creations of the mind. This article, the fourth and final instalment in the series, focuses on trade marks and passing off.
How something is treated as intellectual property (“IP”) under the law depends on the form it takes. Tangibly expressed works, inventions, designs, goodwill and/or trademarks are all treated differently under the law and governed by different laws and regulations.
Trade marks
Trade mark law is ultimately about fair trading. It protects the time and effort spent by persons in building up a particular sign/logo as the trade mark of their business or brand against unfair competition from traders who seek to take a free ride on the goodwill or reputation the owner has acquired for his goods or services.[1]
Trade mark law comprises two branches:
a. the common law action for passing off (which focuses on protecting a person’s goodwill or business generally; and
b. an infringement action under Singapore Trade Marks Act (which focuses specifically on protecting one’s right to use its own marks).[2]
(1) Passing off
For an action of passing off to succeed, the claimant must show (1) the existence of goodwill (2) misrepresentation by the wrongdoer and (3) damage suffered by the claimant.[3]
Goodwill generally refers to the benefit and advantage of the name, reputation and connection of a business in terms of bringing in customers.[4] For example, how a brand name or logo attracts customers to a business would generally constitute the ‘goodwill’ of the business.
To successfully establish the existence of goodwill, it must be shown that the plaintiff’s mark or get-up is identified by the public exclusively with the claimant’s goods or services or business.[5] However, it is not necessary for members of the public to actually know the name or identity of the claimant as manufacturer or supplier.
For example, if the issue arises whether there is goodwill in the Sprite soft drink, it is not necessary to show that the public identifies this drink with Fraser & Neave (F&N) Ltd. All that is necessary is that the public identifies the Sprite drink with a particular business or source.
The element of misrepresentation requires proof that the respondent’s goods or services were held out to be, or to be connected with, the claimant’s business, thereby giving rise to confusion.[6] The respondent will be found liable even if he had no intention to deceive or mislead the public; what is necessary is the actual or anticipated effect of the respondent’s action on the minds of those in the relevant segment of the public.[7]
The question is thus whether ordinary sensible members of the public would be confused (the likelihood of confusion is thus sufficient) by the representation of the alleged wrongdoer. The relevant public for the purposes of showing this are persons who are “probably purchasers of the good/service in question”, and it need only be shown that a substantial portion of this group would be confused.
Some of the factors which will affect whether confusion is shown are:
a. the degree of similarity between the parties’ get-up;
b. degree of distinctiveness of the claimant’s get-up;
c. the respondent’s intention in adopting the get-up;
d. proximity of parties’ fields of activity.[8]
The element of damage simply requires that the respondent’s misrepresentation has caused or is likely to cause damage to the claimant’s business or goodwill. If the claimant is relying only on the likelihood of damages, it cannot just be shown that this is a mere possibility. Instead, there must be a real tangible risk that the goodwill would be damaged by the respondent’s misrepresentation.
(2) Trade Marks Act
Separate from an action of passing, any natural or legal person may apply for and own a registered trademark under the Trade Marks Act (the Act). This will give an owner a right enforceable against third parties. Such a mark can be protected both under the Trade Marks Act and the tort of passing off.
A trade mark is defined in the Trade Marks Act as “any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”. Most trade marks comprise one or more of the following elements:[9]
a. A word with a logo;
b. A logo;
c. A word together with stylised letters .
The applicant for a trade mark registration must have used or have a bona fide intention to use the trade mark in relation to the goods or services set out in the application.[10] Trade marks are to be distinguished from brands, which do not enjoy protection under the Trade Marks Act.
However, the registration can be refused for:
a. not falling within the definition of trade mark above;
b. being devoid of any distinctive character;
c. consisting exclusively of signs or indications which may serve to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services, or other characteristics of goods or services; and
d. consisting exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.[11]
Nonetheless, a trade mark must not be refused registration by virtue of the above if, before the date of the application for registration, it has in fact acquired a distinctive character as a result of the use made of it.[12]
Whether or not a trade mark falls into one or more of these categories for refusal is considered with reference to the goods or services contained in the application. For example, if a person seeks to register the word mark ‘TABLET’ for toys may not be considered to be devoid of distinctive character. However, to do so for pharmaceutical products would be considered devoid of distinctive character since it is simply descriptive of the subject goods.
Case Study: Kit-Kat bars (Societe des Produits Nestle SA v Petra Foods Ltd) (“Nestle”)
In the Nestle case, Nestle claimed that the shape of Petra Foods Take-it chocolate wafer product infringed its two- and four-finger Kit-Kat registered shape marks (below).
In response, Petra Foods sought invalidity and revocation of Nestle’s two shape marks and counterclaimed for groundless threats of trade mark infringement. Among Petra Foods’ invalidity claims was that Nestle’s registered shape marks fell within sections 7(1)(a) and 7(1)(b) of the Trade Marks Act, in that the marks had not crossed the basic threshold of being capable of distinguishing the goods for which they had been registered and/or that the marks were devoid of any distinctive character.
The Court found for Petra Foods on the ground that, amongst other things, the registration should have been refused on the basis of section 7(1)(b). Nestle appealed the Court’s decision but failed. The Court of Appeal was satisfied that Nestle’s registered shapes lacked inherent distinctiveness. First, they did not represent a significant departure from the norms and customs of the chocolate confectionary sector. Second, there was no evidence that the average consumer appreciated that the registered shapes convey trade mark significance. There was also no evidence suggesting that traders in the chocolate confectionary sector differentiate their products by varying the shapes of their products (Nestle at [34]).
The Court of Appeal also concluded that Nestle had only shown at the best mere association between the registered shape marks and itself and/or its Kit Kat product (what was required to be shown was instead that persons relied upon the shape on its own as indicating they originated from Nestle or were Kit-Kat products). Further, given that the Kit Kat product had always been sold in a wrapper affixed with the Kit Kat logo, the court considered that any association shown between the registered shape marks and Nestle and/or Kit Kat was unlikely to be referable to the use of the registered shapes on their own.
In addition to the above, a trade mark must also not be registered if it is identical to an earlier trade mark and the goods or services for which the trade mark is sought to be registered are identical with the goods or services which the earlier trade mark protected,[13] or if they are deceptive as to the nature, quality or geographical origin of the goods or service).[14]
(3) Trade Mark Infringement
The successful registration of a trade mark accords its proprietor the exclusive right to use the mark in relation to the goods or service in respect of which registration was made for the duration of the registration (generally 10 years, with a possible renewal of 10 further years),[15] and to authorise other persons to do the same.[16]
The mark proprietor may also bring an infringement claim against any person who does the following set out in the Trade Marks Act without the proprietor’s consent:
a. uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered;[17] and
b. in relation to well-known registered trade marks –
i. uses a sign similar to the trade mark in relation to goods or services not similar to those for which the trade marks were registered;
ii. uses the trade mark in relation to goods or services which would indicate a connection between those goods or services and the proprietor;
iii. there exists a likelihood of confusion on the part of the public from such use; and
iv. the proprietor’s interests are likely to be damaged by such use.[18]
Similar to other breaches of intellectual property rights, the remedies one can pursue in an action for trademark infringement are:
a. an injunction;
b. a monetary award (damages, account of profits or statutory damages);
c. an order for the erasure of the offending sign;
d. an order for delivery up and disposal of the infringing goods.[19]
(4) Duration of trademark protection
Under the Trade Marks Act, a trade mark is registered for a period of 10 years from the date of registration, and registration may be renewed for further periods of 10 years. In this sense, trademark protection can extend indefinitely since there is no limit on how many subsequent renewals can be registered for them. This is however subject to the possible revocation of registration of the trademark which may occur for a variety of reasons such as non-use of the mark, or the fact that the mark has become generic or misleading.
If you require any legal advice regarding intellectual property, our experienced team will be glad to assist you. Kindly contact us here.
Sources
Law of Intellectual Property of Singapore (2014, Sweet & Maxwell, 2nd Ed) at [15.2.2].
Law of Intellectual Property of Singapore (2014, Sweet & Maxwell, 2nd Ed) at [15.3.1].
Tuitiongenius Pte Ltd v Toh Yew Keat and another [2021] 1 SLR 231 at [81].
Law of Intellectual Property of Singapore (2014, Sweet & Maxwell, 2nd Ed) at [17.1.1].
Law of Intellectual Property of Singapore (2014, Sweet & Maxwell, 2nd Ed) at [17.2.1].
Tuitiongenius Pte Ltd v Toh Yew Keat and another [2021] 1 SLR 231 at [88].
Law of Intellectual Property of Singapore (2014, Sweet & Maxwell, 2nd Ed) at [18.0.2].
Law of Intellectual Property of Singapore (2014, Sweet & Maxwell, 2nd Ed) at [18.3.9]-[18.3.16].
Section 2 Trade Marks Act.
Section 5(2)(e) Trade Marks Act.
Section 7(1) Trade Marks Act.
Section 7(2) Trade Marks Act.
Section 8 Trade Marks Act.
Section 7(4)(b) Trade Marks Act.
Section 18 Trade Marks Act.
Section 26 Trade Marks Act.
Section 27(2) Trade Marks Act.
Section 27(3) Trade Marks Act.
Sections 31 to 33 Trade Marks Act.